WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NBC Universal, Inc. v. Supercue
Case No. D2008-0851
1. The Parties
Complainant is NBC Universal, Inc., of Delaware, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
Respondent is Supercue, of Seminole, Florida, United States of America.
2. The Domain Names and Registrars
The disputed domain names <nbcbaltimore.com>, <nbcminneapolis.com>, <nbcportland.com>, and <nbcsacramento.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2008. On June 4, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 4, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 18, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on July 28, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is one of the world's leading media and entertainment companies. Complainant owns and operates a leading television stations group, and has been a prominent broadcaster, first in radio in the 1920s, then in television since the 1940s. Complainant owns many trademark registrations in the United States of America (“United States”) and elsewhere, including the United States registration for the NBC mark, Registration No. 619,641 in Class 38, registered on January 17, 1956.
Complainant also owns and uses several domain names consisting of the NBC mark in connection with a United States city name, including NBCPHILADELPHIA.COM, NBCMIAMI.COM, NBCSANDIEGO.COM, NBCRALEIGH.COM, NBCSANFRANCISCO.COM, NBCSTLOUIS.COM, NBCCHICAGO.ORG, NBCWASHINGTONDC.COM, and NBCSANJOSE.COM.
Publicly available records indicate that the disputed domain names, “nbcbaltimore.com, nbcminneapolis.com, nbcportland.com, and nbcsacramento.com,” were all registered August 9, 2007 by Respondent using a privacy service offered by GoDaddy.com, Inc.
5. Parties' Contentions
Identical or Confusingly Similar to Complainant's Trademark
Complainant contends that the disputed domain names are identical to and confusingly similar with Complainant's famous NBC mark because they fully incorporate the NBC mark. Citing several UDRP decisions, including Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Microsoft Corporation v. Webbangladesh.Com, WIPO Case No. D2002-0769; and Harrods Limited v. John Griffin, WIPO Case No. D2002-0641, Complainant contends that the mere addition of geographic or city names to the NBC mark is of no importance. Complainant contends this is particularly true since it is well known that Complainant's NBC television network consists of over 200 affiliated stations in all the major cities of the United States.
Given the unique character and worldwide renown of the NBC mark, as well as Complainant's use of its mark in combination with geographic identifiers to describe its regional affiliates, Complainant contends that there can be no doubt that consumers would reasonably believe that the domain names are related to Complainant. Moreover, consumers searching the Internet for Complainant by using the NBC name and an associated city name may be directed to Respondent's domain names, thereby creating a likelihood of confusion.
No Rights or Legitimate Interests in Domain Names
Addressing the second element of the Policy, Complainant contends that Respondent cannot demonstrate or establish any legitimate interest in the domain names because Complainant's mark is so well known, citing Allee Willis v. NetHollywood, WIPO Case No. D2004-1030, and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397.
Complainant avers that there is no relationship between Complainant and the Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating the Complainant's NBC mark.
According to Complainant, Respondent has registered and is using the domain names solely for commercial gain. The disputed domain names link to a search engine and linking portal, at which the user also receives a variety of “popup” and/or “popunder” advertising. Complainant notes that the search engines and linking portals located at the disputed domain names display a number of links that offer everything from television and news channel information, to regional events and entities, to dating and travel services.
Through a series of detailed allegations, Complainant explains its belief that the Respondent derives financial benefit from the web traffic that is diverted through the domain names in the form of click-through revenue, and from the “popup” or “popunder” advertising. Consequently, Complainant argues, Respondent has registered and is using the domain names, not for any legitimate non-commercial or fair-use purpose, but rather to profit from the web traffic generated through the domain names. By its nature, Complainant concludes, such commercial use is not a legitimate bona fide offer of goods and services under the relevant authorities.
Registration and Use of Domain Names in Bad Faith
Complainant contends that bad faith registration and use is established by the fact that the domain names completely incorporate the Complainant's NBC mark and were acquired long after the mark became famous. Complainant also contends that the fact that Respondent is using the domain names to divert web traffic to linking portals for profit shows bad faith.
Finally, Complainant contends, Respondent's bad faith is further demonstrated by his use of a privacy registration service.
Based on these allegations, Complainant requests transfer of the disputed domain name.
Respondent did not file a Response or otherwise reply to Complainant's allegations.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition, in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center notified the proceedings to Respondent by using a courier service, directed to the address listed in the WhoIs record for the domain name. The courier package was delivered to Respondent's address, although Respondent has not acknowledged the existence of this proceeding. The Center also notified Respondent by using the email addresses provided for each of the disputed domain names by the registrar in its verification response to the Center, however the electronic notifications were undeliverable.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.
B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) each disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of each domain name; and
(iii) each disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain names are not identical to Complainant's trademarks, the Panel agrees with Complainant and concludes that Respondent's domain names are confusingly similar to Complainant's trademarks.
All of the disputed domain names <nbcbaltimore.com>, <nbcminneapolis.com>, <nbcportland.com>, and <nbcsacramento.com > are made up of the simple combination of the Complainant's trademark and, respectively, the names of the United States cities of Baltimore, Minneapolis, Portland, and Sacramento.
Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not by itself distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan, WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”).
Moreover, panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Consistent with previous decisions, the Panel agrees that the addition of city names to Complainant's trademark does not alter the confusion with Complainant's marks and domain names that Internet users would experience. NBC Universal, Inc. v. Web Advertising, Corp. a/k/a Maison Tropicale S.A., WIPO Case No. D2008-0865.
Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's trademark.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the Respondent. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Based on exhibits accompanying the Complaint, Respondent's websites presently appear to offer a search tool and links to television and news programs.1 The websites also appear to make extensive use of “popup” or “popdown” advertising.
By diverting traffic to third parties using paid link advertisements, the Panel finds that Respondent is using Complainant's mark for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.2
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use Complainant's marks in its domain names and that Respondent is not using the marks as a nickname referring to Respondent. According to the Complainant, Respondent is motivated to use the domain names for commercial gain derived from diverting traffic through the domain names in the form of “click through” revenue and “popup” or “popdown” advertising displayed on the websites. The Panel agrees that Respondent is seeking to attract Internet users through Complainant's widely known marks for Respondent's own commercial purposes.
The Panel therefore finds that Respondent's use of the disputed domain names demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the domain names. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. Moreover, the links posted by Respondent on its websites to which the disputed domain names resolve appear to have no connection to legitimate products of Complainant. The Panel finds therefore that there is no bona fide offering of goods or services by Respondent and that the Complaint has made out a prima facie case.
Filing no Response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain names.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent's concealment of identity or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that Respondent registered the disputed domain names intending to trade on the reputation of Complainant's well-known trademarks. Complainant's marks were registered internationally and widely used to market products and services for decades before Respondent registered the domain names.
The Panel infers that Respondent was aware of Complainant's trademarks when he registered the disputed domain names. See British Sky Broadcasting Group plc. v. Mr. Pablo Merino and Sky Services S.A., WIPO Case No. D2004-0131 (“It is reasonable to conclude that only someone who was familiar with the Complainant's mark would have registered identical domain names.”).
The Panel finds, therefore, that Respondent deliberately attempted to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with Complainant's mark. This constitutes substantial evidence that Respondent registered and is using the domain names in bad faith.
Other circumstances, discussed below, also support the Panel's conclusion that Respondent registered and is using the disputed domain names in bad faith.
While the Panel acknowledges that Respondent may have attempted to conceal its identity, the use of privacy registration services is presently a legally acceptable practice and may be for legitimate purposes. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (see n.16). Without more, the use of a privacy or proxy registration service would not be sufficient to establish bad faith use or registration in this case. Id.
The Panel finds, however, that Respondent's failure to respond to the Complaint and its provision of apparently inaccurate or incomplete contact information in connection with the four registrations presently under consideration are further evidence supporting the conclusion that Respondent registered and is using the disputed names in bad faith. Telstra, supra.
In the absence of a Response from Respondent demonstrating otherwise, this Panel concludes that Respondent has registered and is using the disputed domain names in bad faith and that paragraph 4(a)(iii) of the Policy is also satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <nbcbaltimore.com>, <nbcminneapolis.com>, <nbcportland.com>, and <nbcsacramento.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: August 11, 2008
1 The Panel has also undertaken limited factual research by viewing online pages to which the disputed domain names resolve. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions. This confirms that Respondent has posted on the websites to which the disputed domain names route the kinds of links, popups, and search portals described by Complainant.
2 Complainant's counsel goes to considerable lengths to support with explanation and exhibits Complainant's belief that Respondent is earning revenue through traffic attracted to Respondent's websites using the disputed domain names. While many of the allegations and exhibits are informative and probative, one exhibit seems to be mischaracterized. Exhibit U is represented to be a printout of source code from the websites that shows that “click-through revenue is generated by searchportal.information.com.” Analysis of that code however demonstrates only that Internet users will be redirected to searchportal.information.com; Exhibit U does not, therefore, prove anything about revenue generation. In light of the many other circumstances and panel decisions supporting this Panel's finding that Respondent is receiving pecuniary benefit, the Panel finds that Exhibit U is unreliable evidence and, in this case, unnecessary.